Mondelez India Foods Pvt. Ltd. and Anr. v. Neeraj Food Products

10. The Defendant thereafter appeared sporadically in the matter. At one stage, in the year 2011, parties had submitted that the disputes had been settled and an application under Order XXIII Rule 3 CPC would be filed shortly. However, vide order dated 12th May, 2011, ld. Counsel for the Plaintiff informed the Court that the settlement talks have failed and that a fresh application under Order 39 Rule 2A CPC is being filed. Finally, on 30th November, 2011, the Defendant was proceeded against ex parte.

11. Ex parte evidence was filed by the Plaintiff by way of an affidavit of PW-1 Mr. Tapan Chauhan. The statement of the said witness was recorded on 22nd February, 2013 and the witness was discharged. Evidence was concluded on 3rd July, 2013. The matter was then pending hearing in the category of ‘Finals’.

12. Pursuant to directions of the Court to list ‘Finals’ matters for hearings, the matter was taken up on 8th March, 2022, on which date due to change of name etc., time was sought by the Plaintiffs to file an application under Order XXII Rule 10 CPC. The said application being I.A. 5139/2022, was filed and the same was allowed on 4th April, 2022. The name of the Plaintiff No.1 was changed from Cadbury India Limited to Mondelez India Foods Ltd. Amended memo of parties was filed and recordal of name of the Plaintiff No.1 was taken on record, vide order dated 4th April, 2022. Analysis of Evidence:

13. Ex parte evidence has been filed on behalf of the Plaintiffs by way of an affidavit of Mr. Tapan Chauhan, the authorized signatory of the Plaintiffs. The following exhibits have been filed by the Plaintiffs’ witness: EXHIBIT PARTICULARS Ex.PW 1/1 Power of Attorney dated 17th July, 2012 in favour of PW 1 – Mr. Tapan Chauhan, Assistant Manager – Legal, Cadbury India Limited. Ex.PW 1/2 Assignment Deed dated 3rd March, 2011 between Cadbury Schweppes Overseas Limited and Cadbury UK Limited. Ex. PW 1/3 (Colly) Original certified copies of Trademark Registrations of the Plaintiffs in respect of the ‘GEMS’ products. Ex. PW 1/4 (Colly) Plaintiffs’ registrations worldwide in respect of the trademark ‘GEMS’/ ‘CADBURY GEMS’, as also, ‘CADBURY GEMS’ packaging. Ex. PW 1/5 Trademark License Agreement dated 25th January, 1994 between Cadbury Schweppes Overseas Limited and Cadbury India Limited. Ex. PW 1/6 Notarized copies of the Plaintiffs’ Copyright Registration Certificates. Ex. PW 1/7 (Colly) Original Chartered Accountant Certificates showing Plaintiff's Sales Figures and Sales Volumes for the years 2000-2005 and 2006-2010. Ex. PW 1/8 Chartered Accountant’s Certificates showing sales and advertising/promotional expenditure for the years 2006-

2010. Ex. PW 1/9 Sample of the Plaintiffs’ packaging for its products sold under the brand name ‘GEMS’. Ex. PW 1/9 Sample Representation of Cadbury’s ‘GEMS BOND’ Advertisement Campaign & Promotional Material. Ex. PW Advertising and promotional materials for the Plaintiffs’ brand ‘GEMS’. Ex. PW Printouts of websites showing sales of the Plaintiffs’ products. Ex. PW Printouts of third-party websites showing sales of Plaintiffs’ products. Ex. PW Original packaging of the Defendant’s product.

14. This Court has perused the ex parte evidence led on behalf of the Plaintiffs. The witness, who had appeared, has been duly authorised by Power of Attorney dated 17th July, 2012, and exhibited as Ex.PW-1/1. The document dated 3rd March, 2011 assigning the trademark from Cadbury Schweppes Overseas Limited to Cadbury U.K. Limited, has been exhibited as Ex.PW-1/2. A perusal of the schedule to the assignment shows that two of the marks, in which rights have been assigned, are ‘CADBURY’S MILK CHOCOLATE GEMS’ bearing registration No.249360 dated 20th May, 1968 and ‘CADBURY’S GEMS’ bearing registration No.582896 dated 14th October, 1992. The assignment specifically records that these marks had been applied for by Cadbury Schweppes Overseas Limited and all the beneficial rights, title and interest in the said marks have been assigned to Cadbury U.K. Limited. The legal proceeding certificates and various trademark registrations for the mark ‘GEMS’ have also been placed on record, and exhibited as Ex.PW 1/3 (Colly). The details of the said trademark registrations have been tabulated hereinabove.

15. Some of the global registrations for the marks related to the ‘GEMS’ product have been exhibited as Ex.PW-1/4 along with a declaration of Mr. Mark Jonathan Hodgin on behalf of Cadbury Schweppes Overseas Limited. The same shows registration of the mark GEMS in several countries including Australia, Bahrain, Kuwait, Morocco, Nigeria, Oman, Pakistan, Qatar, Sri Lanka, United Arab Emirates, and United Kingdom.

16. The License Agreement between Cadbury India Limited and Cadbury Schweppes Overseas Limited, permitting the use of the mark ‘GEMS’ by Cadbury India Limited for the exclusive use in the territory of India, Nepal, Bangladesh (Ex.PW-1/5).

17. The copyright registrations granted to Cadbury India Limited, in its former name being ‘M/s. Hindustan Cocoa Products Ltd.’, bearing registration Nos.A-50680/90 and A-49975/89, which depicts a label with a character portrayed in a western suit carrying a gun along with the ‘GEMS’ chocolate products, have been exhibited as Ex.PW-1/6 (Colly). The said artistic works have been extracted hereinabove.

18. Sales figures of the Plaintiffs and the advertisement expenditure for the years 2000 to 2005 and 2006 to 2010 have also been placed on record, and exhibited as Ex.PW-1/8 (Colly). The same have been extracted below: Period Sales Turnover Rs/crores Sales Volume Tons 2000 38 1531 2001 36 1425 2002 42 1732 2003 44 1968 2004 50 2308 2005 61 2716 Year Gross sales Value (Rs in millions) (Note 1) Advertising Expenditure (Rs. in millions) (Note 2) 2006 694.14 40.14 2007 790.45 33.64 2008 919.48 52.68 2009 1,153.42 96.85 2010 1,487.56 165.45

19. The Plaintiffs have also used the ‘GEMS BOND’ feature for promoting their ‘CADBURY GEMS’ products. The same would be relevant for the adjudication of the case and is extracted hereinbelow:

20. Various packaging and other promotional material for the Plaintiffs’ ‘CADBURY GEMS’ products have been exhibited as Ex.PW-1/10. Several internet articles showing sales of the Plaintiffs’ products have been exhibited as Ex.PW 1/11 and Ex.PW 1/12.

21. A complete list of Plaintiffs’ products, as of the year 2006, has been placed on record and exhibited as Ex.PW-1/12. The packaging of the Plaintiffs’ product which is the subject matter of the present suit, and that of the Defendant’s infringing product have been exhibited as Ex.PW-1/9 and Ex.PW-1/13 respectively. Conclusions:

22. This Court has heard ld. Counsel for the Plaintiff and perused the record. The Defendant is ex-parte. A perusal of the pleadings shows that the case of the Plaintiffs is that the use of the impugned mark ‘JAMES BOND’/‘JAMEY BOND’ and the product packaging bearing the said mark, is infringing its registered trademark ‘CADBURY GEMS’/’GEMS’, its copyright registrations featuring the character ‘GEMS BOND’ as set out hereinabove, and also constitutes passing off.

23. The Plaintiff No.1 – Mondelez India Foods Pvt. Ltd. (formerly known as Cadbury India Limited) began its operations in India in the 1947 and has thousands of employees and lakhs of outlets across India. The earliest trademark registration for the ‘GEMS’ product in India is for the word mark ‘CADBURY’S MILK CHOCOLATE GEMS’, vide Trademark Application No.249360 dated 20th May, 1968 in Class 30 used in respect of goods being ‘Milk Chocolate’. Its gross sales value, as depicted above, is more than Rs. 1487.56 millions, as in the year 2010.

24. The Plaintiff’s product branded as ‘CADBURY GEMS’/‘GEMS’ and the packaging thereof is known to the young and old alike. The packaging of the Plaintiffs’ ‘GEMS’ product is very unique with illustrations of colourful button chocolates, on a blue/purple base with the mark ‘GEMS’ depicted in a number of colours and a splash in the middle. The Plaintiff’s GEMS product is one of the most popular and well-recognized chocolate products in India. Almost everyone’s childhood is associated with the consumption of the Plaintiff’s ‘CADBURY GEMS’/‘GEMS’.

25. The Plaintiffs have obtained copyright registrations in respect of the artistic works set out hereinabove, involving a character referred to as ‘GEMS BOND’ and used as an advertisement/promotion. Various advertisements of ‘GEMS’ bear the image of ‘GEMS BOND’ and some samples of the same have also been placed on record. The Defendant’s packaging uses the mark ‘JAMES BOND’/ ‘JAMEY BOND’ with the same blue/purple base and colourful button chocolates. The mark ‘GEMS’ is depicted in a brown background in the Plaintiff’s product, so also, in the Defendant’s products. The entire colour scheme of the Defendant’s product is identical to that of the Plaintiffs’ label and packaging. The marks are also confusingly and deceptively similar.

26. The Defendant has filed its written statement at an early stage and though the Defendant is ex-parte, the defences raised therein are being considered. In the written statement, the main plank of the Defendant’s case is that the label and the mark are not identical or deceptively similar. No substantial defence has been taken in the written statement, except for claiming that the Defendant’s products are different from the Plaintiffs’ products. A perusal of the documents filed by the Defendant shows that the Defendant had filed the Trademark Application bearing No.1124200 dated August, 2002 in Class 30 in respect of goods being all kinds of food products, including confectionary, churan goli, etc. The user claimed in this application is of the year 1979. The search report in respect of the said trademark has also been placed on record. The same is relied upon by the Defendant to contend that the impugned trade mark/label of the Plaintiffs does not find mention in the search report, and therefore, the said trade mark/label of the Defendant cannot be said to be identical with or deceptively similar to the trade mark/label of the Plaintiffs. The product packaging/label of a third-party seller under the name ‘YO YO’ has also been placed on record to show that the same is deceptively similar to the Plaintiffs’ products. The said label is set out below:

27. Insofar as the documents of user filed by the Defendant are concerned, there is not a single advertisement, which has been placed on record. There are only a few kacha invoices, all of which date back to the years 2001-02. No other documents have been placed by the Defendant showing user.

28. In the background of these pleadings and documents placed on record by the parties, this Court is of the opinion that the present is a case of res ipsa loquitur. The comparative labels set out hereinabove show that the two products have startling similarities. Some of the features, which are similar, are set out below:

I. The Defendant has also placed half chocolate-tablets showing the chocolate centre in the exact same manner as the Plaintiffs.

29. In two seminal judgements of the Supreme Court, the test of infringement and deceptive similarity of competing marks is well settled. The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968, has observed that the said question has to be approached from the point of view of a man of average intelligence and of imperfect recollection. It was observed that, to such a man, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them. The relevant extracts from the judgment in Corn Products (supra) are set out below:

30. In Parle Products (P) Ltd. v. J.P. & Co., Mysore [AIR 1972 SC 1359], it was held that the Court has to see similarities and not the dissimilarities. The relevant extracts of the said judgment, which has been followed in innumerable judgments subsequently, are set out hereinbelow: “According to Kerly’s Law of Trade Marks and Trade Names (9th Edition Paragraph 838) “Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with the one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”

31. Similar is the view taken by the ld. Single Judge of this Court in ITC Ltd. v. Brittania Industries Ltd. [233 (2016) DLT 259], wherein the Plaintiff sought to restrain the Defendant from violating its rights in the Plaintiff’s packaging/trade dress of ‘Sunfeast Farmlite Digestive – All Good’ biscuit by using a deceptively and confusingly similar trade dress for its ‘Nutri Choice Digestive Zero’ biscuit. On the aspect of deception and confusion, the Court placed reliance upon Parle Products (supra) and observed as under:

34. The present is a commercial suit, which has remained pending since the year 2005. The Defendant has been irregular in its appearance before the Court and has contributed to the delay. Even otherwise, the Defendant has been proceeded against ex parte and has not led any evidence. The defence of the Defendant did not stand proved, especially in view of the competing packagings which have been exhibited and placed on record. The Defendant has also not denied having sold chocolates under the infringing packaging. The search report of the Defendant placed on record shows that the Defendant had adopted a packaging with the same illustrations and blue/purple colour as that of the Plaintiffs’ product. Therefore, the impugned packaging of the Defendant’s product sold under the mark ‘JAMES BOND’/‘JAMEY BOND’ has clearly infringed the Plaintiffs’ rights in the mark ‘CADBURY GEMS’, as also, the copyright in respect of the products sold under the said mark.

35. An interim injunction has been operating in the present suit since 25th May, 2007. For some time, contempt was alleged by the Plaintiff and an application under Order XXXIX Rule 2A CPC was sought to be filed. However, at the time of final arguments, no submission has been made to the effect that the Defendant’s products continued to be available in the market. Accordingly, the reliefs sought in respect of delivery up and for recall of the Defendant’s products are not granted at this stage. However, if the Plaintiffs finds any infringing products in the market, they are free to seek execution of the decree, seeking delivery up, at that stage.

36. The Plaintiffs have further spent a substantial amount of money towards litigation costs, including court fee, counsels’ fees and miscellaneous expenses. Therefore, considering the observations of the Supreme Court on the issue of costs to be awarded in commercial matters in Uflex Ltd. v. Government of Tamil Nadu & Ors. [Civil Appeal Nos.4862- 4863 of 2021, decided on 17th September, 2021], as also, in terms of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022, this is a fit case for grant of actual costs.

37. In view of the above findings, the present suit is decreed in terms of the reliefs of permanent and mandatory injunction as sought in paragraphs (A) and (B) of the prayer clause as set out in the Plaint.

38. Insofar as the relief of damages as sought in paragraph (C) of the prayer clause is concerned, the present is a fit case for award of damages. Accordingly, in view of the flagrant violation of the Plaintiffs’ rights, damages to the tune of Rs.10 lakhs are awarded in favour of the Plaintiffs.

39. Accordingly, actual costs of Rs.15,86,928/- are awarded in favour of the Plaintiffs, in terms of the relief as sought in paragraph (D) of the prayer clause as set out in the Plaint. Let the statement of costs filed by the Plaintiffs be taken on record.

40. The Defendant shall pay the costs and damages to the Plaintiffs, within three months, failing which, the Plaintiffs shall be permitted to seek execution of the decree or avail of its remedies, in accordance with law.

41. Decree sheet be drawn accordingly. All pending applications are also disposed of.

PRATHIBA M. SINGH JUDGE JULY 26, 2022/dk/ad